Five Impactful USPTO Procedural Developments for Patent Practitioners
Nonpublication Requests For Patent Applications: Disadvantages
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
As the world pivoted to navigate obstacles brought on by the COVID-19 pandemic, the USPTO not only adapted to address the challenges, but appeared to make the most of this period by improving existing procedures. Partner...more
In today's connected global economy, obtaining patent protection in multiple jurisdictions is the best way for companies to protect their IP on a global scale. But every jurisdiction has different patentability requirements...more
Patent protection in China has been a hot topic of discussion and strategy for U.S. companies. The U.S. Patent and Trademark Office (USPTO) China team within the USPTO's Office of Policy and International Affairs is a...more
Our “Innovation Conversations” series continues with our guest Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sterne Kessler Directors Trey...more
Business factors typically drive many strategy decisions in terms of patent prosecution in foreign jurisdictions. Factors that influence these decisions might include the likelihood of foreign competition, the size of foreign...more
Two important, but sometimes overlooked issues in patent prosecution, particularly for companies with worldwide patent portfolios, are: 1) when a foreign filing license must be obtained; and 2) how to determine when an export...more
An essential part of U.S. patent prosecution is the duty of disclosure, which requires the disclosure of all known information that is material to patentability. 37 C.F.R. § 1.56....more
On December 19, 2019, the Hong Kong Intellectual Property Department (HKIPD) will launch a new patent system as the result of the Patents (Amendment) Ordinance 2016 and the Patents (General) (Amendment) Rules 2019. Under the...more
The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update...more
Use of Post-Filing Data to Support Patentability - The use of post-filing data to support patentability can be a mechanism to alleviate time pressures related to first-to-file patent regimes. However, the admissibility of...more
Claim construction, the process by which a court interprets the scope and meaning of a patent’s claims, is a crucial part of patent litigation. In fact, claim construction can make or break a patentee’s case for infringement...more
This article discusses foreign filing requirements in Europe—in particular, the United Kingdom and Germany. Assuming each is the country of invention, the following questions are explored for each jurisdiction: (1) who needs...more
Survey of Foreign Filing Requirements in the United States, China, and Europe - Many governments require approval of technical subject matter described in patent applications in the form of a foreign filing license prior...more
Technology Spotlight - Patenting Blockchain Technology - Blockchain is a booming technology, causing a dramatic increase in patent filings at the U.S Patent and Trademark Office. The November 2018 issue of Sterne Kessler’s...more
A Survey of Third Party Observation Systems - Third party observations can be a cost-effective way of introducing prior art or arguments related to patentability of a published patent application. The September 2018 issue...more